Complainant is Royal Bank of Canada (Banque Royale du Canada), Canada, represented by Gowling WLG (Canada) LLP, Canada.
Respondent is WhoisGuard Protected, Panama / RB CM, United Kingdom (“UK”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2021. On March 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 12, 2021. In response to a notification by the Center requesting the submission of the cover sheet to the Complaint, Complainant filed an amended Complaint on March 17, 2021. The Center verified that the Complaint together with the amendment to the Complaint and amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 9, 2021. The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 16, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. By email dated May 3, 2021, Respondent requested additional time for the purpose of responding to the Complaint. By email of the same date, Complainant objected to the grant of that extension. The Panel by email of May 3, 2021 requested the Center to notify the parties on its behalf that the Panel declined to grant an extension to Respondent. Such an extension was unwarranted, among other reasons, because Respondent is engaged in bad faith use of the disputed domain name (as determined below) with potential continuing adverse financial impact on Internet users that may also adversely impact Complainant’s financial interests. Delay by the Panel in rendering its determination in these circumstances was not appropriate. 4. Factual Background Complainant is the owner of registrations on the trademark registries of the Canadian Intellectual Property Office (“CIPO”), the European Union Intellectual Property Office (“EUIPO”) and the United Kingdom Intellectual Property Office (“UKIPO”), among other trademark offices, for the trademark RBC, and for various RBC-formative trademarks, including RBC CAPITAL MARKETS. At the CIPO, these include for the word mark RBC, registration number TMA673134, registration dated September 22, 2006, in international classes (“ICs”) 35 and 36, covering financial services of various types; registration number TMA 424800, registration dated March 4, 1994, in IC 36, covering insurance services, and; registration number TMA 369496, registration dated June 15, 1990, in ICs 36 and 42, covering various financial and real estate investment services. These include at the CIPO, for the word mark RBC CAPITAL MARKETS, registration number TMA 601871, registration dated February 11, 2004, in ICs 35 and 36, covering various financial services. At the EUIPO, for the word mark RBC, these include registration number 2026375, registration dated January 21, 2004, in ICs 9, 35, 36, 38 and 42, covering business consultancy, financial services, Internet management and database services, and; for the word mark RBC CAPITAL MARKETS, registration number 2221166, registration dated July 28, 2003, in IC 36, covering various financial services. At the UKIPO, for the word mark RBC, these include registration number 2276921, registration dated August 30, 2002, in ICs 9, 35, 36, 38 and 42, covering various financial consultancy and management services, and; for the word mark RBC CAPITAL MARKETS, registration number 2278433, registration dated March 21, 2003, in IC 36, covering various financial services. Complainant is one of the largest private banking institutions in Canada, with over 86,000 full and part-time employees, and serving 17 million clients in Canada and in 34 other countries worldwide. Complainant operates its primary commercial website at “www.rbc.com”. According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification the disputed domain name was registered on January 13, 2021. There is no indication on the record of this proceeding that the record of registration of disputed domain name has been owned by any party other than Respondent. Respondent has used the disputed domain name to direct Internet users to a website employing an “rbc markets” banner and logo, and with a series of tabs offering web-based financial markets trading services. These include services in the foreign exchange, equities, crypto currency, commodities and indices markets. The services are offered at various tiers (i.e., “standard”, “premium” and “luxury”), with “starting deposits” ranging from USD 250 to USD 50,000. The “About Us” tab on this website offers no specific information regarding the management or ownership of the website operator. According to Complainant, following a small initial opening deposit, Internet users that register at the website are encouraged/directed to raise their deposit to USD 10,000. The Investment Industry Regulatory Organization of Canada (“IIROC”), the national self-regulatory organization overseeing investment dealers and trading activity on debt and equity marketplaces in Canada, was contacted by an individual investor who had been requested to deposit USD 10,000 at the aforesaid website. That caller had spoken with a Michael Romano who indicated that the website was part of Complainant working in Switzerland. The IIROC advised the caller that the website business was not registered in Canada, and suggested the caller contact the Ontario securities commission. Based on similarity in content, Complainant believes that Respondent also operates a deceptive website at Complainant notes that a Mr. Michael Romano has been convicted of mail and wire fraud in the United States for operating a multimillion-dollar scheme involving allegedly valuable rare coins that were essentially worthless.1 The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant Complainant alleges that it owns rights in the trademarks RBC and RBC CAPITAL MARKETS (among other RBC-formative marks), and that the disputed domain name is confusingly similar to those trademarks. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) the activities of Respondent in registering and using the disputed domain name cannot be considered bona fide; (2) impersonation of Complainant in furtherance of a fraudulent scheme is prima facie evidence of lack of rights; (3) there is no relationship between Complainant and Respondent, whether through licensing or other authorization of use of Complainant’s trademarks, and; (4) Respondent has not been commonly known by the disputed domain name, and is not making or intending to make a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent registered the disputed domain name for purposes of disrupting the business of Complainant; (2) use of a disputed domain name for fraudulent purposes may constitute bad faith; (3) Respondent is using the disputed domain name that is confusingly similar to Complainant’s trademarks to intentionally attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation or endorsement. Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Center formally notified the Complaint to Respondent at the email, fax, and physical addresses provided in its record of registration. The fax transmission could not be completed to the number listed in the record of registration, and it appears that courier delivery could not be completed to the address in the UK listed in the record of registration because it was false. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar Complainant has provided evidence of rights in the trademarks RBC and RBC CAPITAL MARKETS, including by registration at the CIPO, EUIPO and UKIPO, and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the trademarks RBC and RBC CAPITAL MARKETS. The disputed domain name incorporates Complainant’s RBC trademark in full. That trademark is readily identifiable in the disputed domain name. The Panel notes the well-known character of Complainant’s trademark, particularly in the financial services industry, and finds that the reproduction of Complainant’s RBC trademark in full is sufficient to establish confusing similarity between Complainant’s trademark and the disputed domain name under the Policy. The disputed domain name incorporates a substantial part of Complainant’s RBC CAPITAL MARKETS trademark, leaving out the word “capital”. The disputed domain name and the RBC CAPITAL MARKETS trademark are visually similar, and have similar meaning. The disputed domain name is confusingly similar to Complainant’s RBC CAPITAL MARKETS trademark. The Panel determines that Complainant owns rights in the trademarks RBC and RBC CAPITAL MARKETS, and the disputed domain name is confusingly similar to those trademarks. B. Rights or Legitimate Interests Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests. Respondent’s use of the disputed domain name to solicit funds from investors under the false pretense that Respondent is associated with Complainant that is conveyed by the use of Complainant’s trademarks, along with Respondent’s reported telephone confirmation that Respondent is associated with Complainant, does not establish rights or legitimate interests in the disputed domain name in favor of Respondent. Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”. Respondent has used Complainant’s well-known and distinctive trademarks to direct Internet users to a website where Respondent is soliciting deposit of funds under the false pretense that Respondent is associated with Complainant. Such use constitutes intentionally attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant (through use of Complainant’s trademarks) as the source, sponsor, affiliate or endorser of Respondent’s website. Such use constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Respondent’s registration and use of the disputed domain name disrupts the business of Complainant by creating a strong likelihood that individuals seeking the services of Complainant will be subject to financial losses without knowledge or fault of Complainant. Complainant might well become embroiled in attempting to resolve claims based on the false impression that it is the affiliate or sponsor of Respondent’s website. In this respect, Respondent’s use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iii) of the Policy. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, Frederick M. Abbott 1 See Boiler Room Operator Sentenced to 20 Years in PrisonfFor Scamming Millions of Dollars from Elderly Coin Collectors in All Fifty States, United States Department of Justice, Eastern District of New York, press release of February 27, 2014, https://www.justice.gov/usao-edny/pr/boiler-room-operator-sentenced-20-years-prison-scamming-millions-dollars-elderly-coin (Panel visit of April 26, 2021).
Sole Panelist
Date: May 3, 2021
Full & Egal Universal Law Academy